Let’s Do Something About the Unauthorized Doctrine of Non-Statutory Judicially Created Obviousness-Type Double Patenting

In a June 20, 2022, article on IPWatchdog, I addressed a portion of the June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun  to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal requesting the USPTO to issue a notice of rulemaking or request for comments in the Federal Register by September 1, 2022, on curbing continuation practice as a means to address “patent thickets.”  As of the date of this article, the USPTO has not issued the notice.

In this article, I, along with co-author Anthony Prosser, address the other issue raised in the Senators’ June 8 letter—whether elimination of terminal disclaimers that “allow” patents to issue that are “obvious variations of each other” would increase patent quality and whether patents that are tied by a terminal disclaimer should be considered an admission of obviousness and stand or fall together in litigation.

Given these serious questions raised by the Senators, we took on the task to trace the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (OTDP) to its roots. We confirm that this doctrine is ultra vires because it was not promulgated according to the requirement of the framework of our government. The logical result is that the use of terminal disclaimers to obviate an ultra vires doctrine is also ultra vires. It is also no longer necessary given the 20-year patent term in place since June 8, 1995, as a result of the General Agreement on Tariffs and Trade (GATT).

No Congressional Statutes on OTDP

Congress has the sole right to create patent law (U.S. Constitution Art. 1, Sec. 8, Cl 8). Congress has never passed a statute legislating a framework of obviousness-type double patenting. This is admitted by the courts and the USPTO by referring to the OTDP doctrine. The ability to file a statutory disclaimer was codified by Congress in the 1952 Patent Act as 35 USC §253. The statute did not mention obviousness-type double patenting or the use of a terminal disclaimer to overcome it:

(a)…A patentee, whether of the whole or any sectional interest therein, may make disclaimer of any complete claim…

(b)…Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted…

P.J. Frederico, who advised the Judiciary Committee during the drafting of the 1952 Patent Act, noted the following about §253:

No specific reason for this provision [§253(b)] appears in the printed record, but its proponents contemplated that it might be effective in some instances, in combatting a defense of double patenting, to permit the patentee to cut back the term of a later issued patent so as to expire at the same time as the earlier issued patent and thus eliminate any charge of tension of monopoly.

Commentary of Mr. P.J. Frederico, 35 U.S.C.A. 49.

Frederico had published the authority on Statutory Disclaimers in Patent Law in 1935 and never mentioned OTDP or terminal disclaimers.

Congress thus never gave a documented intent to connect §253(b) to “double patenting” nor used the term “double patenting” at all.  Only “proponents” started to think about how it might be used. We are reminded of the famous quote from Justice Scalia that Congress does not hide elephants in mouseholes. Whitman v. Am. Trucking Ass’n., Inc., 531 U.S. 457,468 (2001).

Given that there is no clear statutory language or even legislative intent that §253(b) was an antidote for “double patenting,” and no direct Congressional statute that denies full patent protection for what is referred to by courts and the USPTO as obviousness-type double patenting by an assignee, how did we get where we are today, with the overwhelming use of these non-statutory doctrines and a labyrinth of seemingly unbounded complex case law?

History of USPTO Treatment of Double Patenting

The term “double patenting” by itself is ambiguous as it fails to distinguish same type double patenting (35 USC § 101), obviousness type double patenting by an assignee (no statutory basis) and restriction requirement-induced double patenting (35 USC § 121; 1952 Patent Act). In multiple articles and case law, the single letter “a” from §101 has been required to carry a lot, and too much, weight as the basis for a co-mingled confused “double patenting” approach.

The Manual of Patent Examining Procedure (MPEP) included a double patenting section in its 1^st Edition (1949). It tied it to two statutes focusing on the “singular” tense for a patent, but seemed to be focused on divisional practice only, and was addressed in the backdrop of a patent law when the patent term was measured from issuance. However, it shows how the USPTO was stretching the meaning of statutes before the 1952 Patent Act to cover what it perceived as some sort of “double patenting.”

R.S. 4886; 35 U.S.C. 31: Any person who has invented or discovered any new and useful art, machine, manufacture or composition of matter may ——— obtain a patent therefor.

R.S. 4888; 35 U.S.C. 33: Before any inventor or discoverer shall receive a patent for his invention or discovery ——- he shall particularly point out and distinctly claim the part, improvement or combination which he claims as his invention or discovery.

The above statutes are worded in the singular; namely, that an inventor may be granted a patent for his invention. This has frequently been held to be the basis for the practice of requiring division, since the statutes authorize the issue of a patent for a single invention and not plural inventions. Conversely, the statutes authorize issue of but one patent, and not two or more patents, to an inventor for one invention, thus establishing the basis for rejections for double patenting.

The 1952 Patent Act added the §121 statute to legislate divisional practice. It is interesting that §121 on divisional practice and §253 on statutory disclaimers were both enacted in the 1952 Patent Act, however it omitted any discussion of OTDP.

The MPEP 3^rd Edition (1961) included a discussion of terminal disclaimers and stated that they do not overcome double patenting.

Where a rejection on applicant’s patent on the ground of double patenting is proper, such rejection cannot be avoided by filing under Rule 321 a disclaimer of the invention claimed in the patent. Ex parte Williams 1917 C.D. 73, 245 O.G. 277. The mere filing of a terminal disclaimer does not ipso facto overcome a rejection on the ground of double patenting In re Siu 1955 C.D. 176, 696 O.G. 421.

This 1961 language was repeated, revision after revision, until the 13^th revision, and then revised as follows in 1967.

When a patent is involved, a rejection on the ground of double patenting may be overcome by filing a Terminal Disclaimer if the claims involved do not overlap. When only applications are involved and the claims do not overlap, the rejection may be overcome by allowing the applications to issue on the same date. See 804.02 for the definition of overlap. Also see 706.03(k), 822 and 822.01.

There was no indication of the statutory basis for why terminal disclaimers can be used only when claims do not overlap, nor specifically what was referred to as “double patenting,” while mandating that the USPTO issue them on the same day instead.

Notably, the 1961 and 1967 MPEP both noted that 35 U.S.C. 121 divisional provision was very burdensome when the USPTO had to distinguish between same type double patenting and divisional practice (not OTDP):

35 U.S.C. 121, third sentence, provides that where the Office requires restriction, neither the parent nor any divisional application thereof conforming to the requirement can be used as a reference against the other. This apparent nullification of double patenting as a ground of rejection invalidity in such cases imposes a heavy burden on the Office to guard against erroneous requirements for restriction where the claims define essentially the same inventions in different language and which, if acquiesced in, might result in the issuance of several patents for the same invention.

The Court Steps In

The concepts of OTDP and terminal disclaimers were not tied together by the courts until 1964, 12 years after the 1952 Patent Act. One would imagine if a new statute was minted to authorize terminal disclaimers for OTDP, it would have been used for the first time in fewer than 12 years.

The case is In re Robeson, 51 C.C.P.A. 1271 (1964). The Patent Office rejected process claims filed in 1956 to make trimethylolpropane for double patenting over a patent application filed by the same assignee in 1954 because the only difference was the substitution of butyraldehyde for propionaldehyde as the starting material. The 1954 patent was not prior art because it had not been published when the 1956 application was filed. Robeson voluntarily submitted a terminal disclaimer of the later patent. The C.C.P.A. stated in its 1964 decision that whether a terminal disclaimer can overcome objections to double patenting has been the subject of much discussion, confirming that it was not clear from the wording of 35 USC §253(b) whether that was an authorized use. Interestingly, the Patent Office had rejected the terminal disclaimer as a means to obviate its double patenting rejection, again confirming that the USPTO, 12 years after the §253(b) was enacted, did not consider it an antidote to OTDP. After quoting the Frederico passage above, the C.C.P.A. divined that Congress would not have wanted obviousness type double patenting for a variety of reasons, and that the terminal disclaimer should be accepted to overcome it.  We assume that there was no 37 C.F.R. 1.321(c) “authorizing” the use of terminal disclaimers to obviate the OTDP rejection at the time because if it did exist the court or MPEP would have quoted it. Instead, the USPTO added 37 C.F.R. 1.321(c) to “authorize” terminal disclaimers to obviate the OTDP rejection after the Robeson decision. The promulgation of 1.321(c) thus did not arise as a result of Congressionally authorized rulemaking, but instead by a non-existent delegation of authority from the judicial system.

The Robeson patent issued in 1957 as U.S. Patent 2,790,837, only one year after the 1956 application filing.  A court guessing unstated Congressional intent could have just as easily reached the opposite conclusion—that Congress was fine allowing an inventor to file potentially obvious modifications while the first application was still confidential because the first application represented the inventor’s own trade secrets to improve as he liked and known only to the USPTO for patent purposes until patent issuance. The patent “quid pro quo” is disclosure in exchange for a loss of trade secret rights, which had not occurred yet. Robeson never argued whether use of butyraldehyde instead of propionaldehyde was an obvious modification because he chose to take an expedient route to try to remove the OTDP rejection with the untested use of a terminal disclaimer under §253(b).

Proper Way to Apply Obviousness Against Same Assignee under Current Statutory Law

Let’s end the fallacy that OTDP by an assignee is authorized by U.S. statutes, or that Congress prescribed its antidote. We are witnessing what happens when a substantive law “doctrine” is created by other branches of the government that is untethered to actual Congressional statutes, but instead based on individualized philosophies on idealized patent law.

How should we go forward? The only statute we have on obviousness is 35 USC §103 and it should be applied according to its terms. If Congress wants to change its laws, it needs to do so, instead of asking the USPTO to act without substantive rulemaking authority.

If a patent applicant presents claims that might be considered obvious over each other, this is the current Congressionally authorized rubric to follow:

1. Claims in applications by the same assignee entitled to the same priority date:

There is no prior art effect because §103 refers to prior art, which by definition has to have existed the day before the priority date of the application.

2. Claims in applications by the same assignee with different priority dates, where the first application was not published before the priority date of the second application:

There is no prior art effect for obviousness under 35 USC 102(b)(2)(c) as revised by Congress’ 2011 America Invents Act.

3. Claims in applications by the same assignee with different priority dates where the first application is published before the priority date of the second application:

The first application is full prior art against the second application for obviousness.

The Federal Circuit in Novartis AG v. Ezra Ventures LLC 909 F. 3d 1367, 1375 (Fed. Cir. 2018) in addressing patent term extensions said:

[T]his court has described obviousness-type double patenting as a “judge-made doctrine” that is intended to prevent extension of a patent beyond a “statutory time limit.” In re Berg, 140 F.3d 1428, 1431-32 (Fed. Cir. 1998). Here, agreeing with Ezra would mean that a judge made doctrine would cut off a statutorily-authorized time extension. We decline to do so.

See also Mitsubishi Tanabe Pharma Corp. v. Sandoz, Inc., 533 F. Supp. 3d 170 (D.N.J. 2021) applying the same logic to patent term adjustments. In fact, this line of reasoning applies to the entire doctrine of ODTP. The courts, and following them, the USPTO, have cut off patent term from what is prescribed in existing statutes, without substantive rulemaking authority. Let’s honor the framework of our government on how laws are created.

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